Case 2:19-cv-06301-AB-KS Document 123-2 Filed 02/05/21 Page 1 of 23 Page ID #:4020
`Case 2:19-cv-06301—AB-KS Document 123-2 Filed 02/05/21 Page 1 of 23 Page ID #:4020
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`EXHIBIT A
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`EXHIBIT A
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`Case 2:19-cv-06301-AB-KS Document 123-2 Filed 02/05/21 Page 2 of 23 Page ID #:4021
`Trials@uspto.gov
` Paper 13
`571-272-7822 Date: November 3, 2020
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FITBIT, INC.,
`Petitioner,
`
`v.
`
`PHILIPS NORTH AMERICA LLC,
`Patent Owner.
`____________
`
`IPR2020-00828
`Patent 8,277,377 B2
`____________
`
`
`Before PATRICK R. SCANLON, FRANCES L. IPPOLITO and
`CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.
`
`SCANLON, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`

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`IPR2020-00828
`Patent 8,277,377 B2
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`I. INTRODUCTION
`Fitbit, Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting
`an inter partes review of claims 1, 4‒6, 9, and 12 of U.S. Patent
`No. 8,277,377 B2 (Ex. 1001, “the ’377 patent”). Philips North America
`LLC (“Patent Owner”) filed a Preliminary Response (Paper 6, “Prelim.
`Resp.”). With our authorization, Petitioner filed a Reply (Paper 7, “Reply”),
`and Patent Owner filed a Sur-reply (Paper 9, “Sur-reply”).
`We have authority to determine whether to institute an inter partes
`review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2019). To
`institute an inter partes review, we must determine that the information
`presented in the Petition shows “a reasonable likelihood that the petitioner
`would prevail with respect to at least 1 of the claims challenged in the
`petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we exercise
`our discretion under 35 U.S.C. § 314(a) to deny institution.
`
`II. BACKGROUND
`A. Related Matters
`The parties identify Philips North America LLC v. Fitbit, Inc., No.
`1:19-cv-11586-IT (D. Mass., July 22, 2019) (“the Fitbit case”) as involving
`the ’377 patent, as well as U.S. Patent 6,976,958 (“the ’958 patent”), U.S.
`Patent No. 7,088,233 (“the ’233 patent”), and U.S. Patent No. 6,013,007
`(“the ’007 patent”). Pet. 1; Paper 3, 1. Patent Owner adds that the ’377,
`’958, ’233, and ’007 patents, as well as U.S. Patent Nos. 9,314,192 and
`9,801,542, are at issue in Philips North America LLC v. Garmin
`International, Inc. et al., Case No. 2:19-cv-06301-AB-KS (C.D. Cal., June
`8, 2020) (“the Garmin case”). Paper 3, 1.
`
`
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`2
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`IPR2020-00828
`Patent 8,277,377 B2
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`
`Petitioner has filed a petition for inter partes review challenging the
`’958 patent (IPR2020-00782). Pet. 1; Paper 3, 1–2. Petitioner has also filed
`a petition for inter partes review challenging the ’233 patent (IPR2020-
`00783). Pet. 1; Paper 3, 1–2.
`B. Real Parties-in-Interest
`Petitioner identifies itself as the real party-in-interest. Pet. 1. Patent
`Owner identifies itself as the real party-in-interest. Paper 3, 1.
`C. The ’377 patent
`The ’377 patent, titled “Method and Apparatus for Monitoring
`Exercise with Wireless Internet Connectivity,” issued October 2, 2012, with
`claims 1–19. Ex. 1001, code (54), code (45), 13:23–16:5. Figure 1 is
`reproduced below.
`
`
`Figure 1 depicts a general embodiment of a wireless health-monitoring
`system. Id. at 5:24–25. More specifically, the ’377 patent discloses wireless
`health-monitoring system (“WHMA”) 10 for monitoring health data from a
`patient or subject 38. Id. at 6:36–37. WHMA 10 is wirelessly linked to
`wireless connection point of presence (“POP”) 19. Id. at 6:39–41. POP 19
`
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`includes base station antenna 15 that is coupled to server 17, which in turn is
`connected to Internet 21. Id. at 6:41–44.
`In addition, WHMA 10 includes health monitoring device (“HMD”)
`11 and wireless web device (“WWD”) 12. Id. at 6:45–48, Fig. 2. HMD 11
`may include physiologic sensor 24 or manual system 36 for input of
`physiologic data via a connection 34. Id. at 6:52–54, Fig. 2. WWD 12,
`which can be a web-enabled cellular phone, connects wirelessly to base
`station 15 to provide a user interface. Id. at 3:58–59, 6:48–50.
`Figure 4 is reproduced below.
`
`
`Figure 4 is a data flow diagram of the invention. Id. at 5:32–33. WHMA 10
`is shown in signal communication with server 22. Id. at 7:66–67. WHMA
`10 includes an application having two components: base wireless or device
`application 70 and application presentation interface 68. Id. at 8:3–5. These
`applications may accept input from sensor 24. Id. at 8:10–12. In addition,
`application 70 can send health data to server application 62. Id. at 8:61–63.
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`4
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`IPR2020-00828
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`D. Challenged Claims
`Of the challenged claims, claim 1 is the only independent claim and is
`reproduced below:
`1.
`A method for interactive exercise monitoring, the method
`comprising the steps of:
`a. downloading an application to a web-enabled wireless
`phone directly from a remote server over the internet;
`b. coupling the a web-enabled wireless phone to a device
`which provides exercise-related information;
`c. rendering a user interface on the web-enabled wireless
`phone;
`d. using the application, receiving data indicating a
`physiologic status of a subject;
`e. using the application, receiving data indicating an
`amount of exercise performed by the subject;
`f. wherein at least one of the data indicating a physiologic
`status of a subject or the data indicating an amount of exercise
`performed by the subject is received from the device which
`provides exercise-related information, and wherein the data
`indicating a physiologic status of a subject is received at least
`partially while the subject is exercising;
`g. sending the exercise-related information to an internet
`server via a wireless network;
`h. receiving a calculated response from the server, the
`response associated with a calculation performed by the server
`based on the exercise-related information; and
`i. using the application, displaying the response.
`Ex. 1001, 13:23‒47.
`E. Asserted Grounds of Unpatentability
`Petitioner contends that the challenged claims are unpatentable based
`on the following grounds:
`
`
`
`
`5
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`IPR2020-00828
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`Reference(s)/Basis
`Claim(s) Challenged 35 U.S.C. §1
`Browne,2 Ausems,3 Hsu4
`1, 4–6, 9, 12
`103
`Hickman,5 Theimer6
`1, 4, 5, 9, 12
`103
`Hickman, Theimer, Vaisanen7
`6
`103
`Pet. 2–3. Petitioner also relies on the Declaration of Dr. Majid Sarrafzadeh
`(Ex. 1002, “the Sarrafzadeh Declaration”).
`
`III. ANALYSIS
`A. Discretion Under 35 U.S.C. § 314(a)
`Patent Owner argues that we should exercise our discretion under
`35 U.S.C. § 314(a) to deny institution in view of the Fitbit and Garmin
`cases. Prelim. Resp. 16–23.
`The Director has discretion to institute an inter partes review under 35
`U.S.C. § 314(a). Gen. Plastic Indus. Co. v. Canon Kabushiki Kaisha,
`IPR2016-01357, Paper 19 at 15 (PTAB Sept. 6, 2017) (precedential) (citing
`35 U.S.C. § 314(a)). In exercising the Director’s discretion under 35 U.S.C.
`§ 314(a), the Board may consider “events in other proceedings related to the
`same patent, either at the Office, in district courts, or the ITC.”
`Consolidated Trial Practice Guide November 2019 (“TPG”) at 58.
`
`
`1 The Leahy-Smith America Invents Act (“AIA”) included revisions to
`35 U.S.C. § 103 that became effective on March 16, 2013. Pub. L. No. 112-
`29, §§ 3(c), 3(n)(1), 125 Stat. 284, 287, 293 (2011). Because the application
`from which the ’377 patent issued was filed before March 16, 2013, we
`apply the pre-AIA versions of § 103.
`2 US 5,598,849, issued February 4, 1997 (Ex. 1005).
`3 US 6,434,403 B1, issued August 13, 2002 (Ex. 1008).
`4 US 6,587,684 B1, issued July 1, 2003 (Ex. 1009).
`5 US 6,059,692, issued May 9, 2000 (Ex. 1004).
`6 US 6,519,241 B1, issued February 11, 2003 (Ex. 1006).
`7 US 6,560,443 B1, issued May 6, 2003 (Ex. 1007).
`
`6
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`We consider an advanced state of a parallel district court proceeding
`as a “factor that weighs in favor of denying the Petition under § 314(a).”
`NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 (PTAB
`Sept. 12, 2018) (precedential). Specifically, we consider an early trial date
`as part of a “balanced assessment of all relevant circumstances of the case,
`including the merits.” TPG at 58. As part of this balanced assessment, we
`consider the following factors:
`1. whether the court granted a stay or evidence exists that
`one may be granted if this proceeding is instituted;
`2. proximity of the court’s trial date to the Board’s
`projected statutory deadline for a final written decision;
`3. investment in the parallel proceeding by the court and the
`parties;
`4. overlap between issues raised in the petition and in the
`parallel proceeding;
`5. whether the petitioner and the defendant in the parallel
`proceeding are the same party; and
`6. other circumstances that impact the Board’s exercise of
`discretion, including the merits.
`Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5–6 (PTAB Mar. 20,
`2020) (precedential) (“Fintiv”). “[I]n evaluating the factors, the Board takes
`a holistic view of whether efficiency and integrity of the system are best
`served by denying or instituting review.” Id. at 6. We now apply these
`factors to the facts and circumstances present here.
`
`1.
`
`Factor 1: whether the court granted a stay or evidence exists that one
`may be granted if this proceeding is instituted
`The district court in the Fitbit case has not granted a stay or been
`asked to do so. Prelim. Resp. 19. Patent Owner argues that even if Fitbit
`were to move for a stay, it would be unlikely to be granted given the
`
`7
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`advanced state of the litigation and the fact that patents other than the ’377
`patent are at issue in the Fitbit case. Id.
`Petitioner counters that the district court in the Fitbit case “typically
`grants stays upon institution,” citing several examples, and represents that it
`will seek a stay if this proceeding is instituted. Reply 2–3 (citing Exs. 1029–
`1031). As Patent Owner points out, in one of the examples, the stay was
`granted after the Board had issued a final written decision, finding all of the
`asserted claims to be unpatentable (Ex. 1029). Sur-reply 1–2. The other two
`examples, however, are instances in which the court granted a stay after
`institution. Exs. 1030, 1031. Petitioner also provided examples where the
`court denied a stay when an IPR had not yet been instituted, but left open the
`possibility of a stay if the proceeding ultimately was instituted. Exs. 1053,
`1054. Patent Owner does not provide any examples that shed light on the
`likelihood of a stay.
`The parties do not address whether the district court has considered
`granting a stay in the Garmin case, and we are not aware of any evidence of
`record that a stay is or is not likely to be granted in the Garmin case if this
`proceeding is instituted.
`In view of the above, we decline to speculate as to the likelihood of a
`stay of the district court proceedings. Accordingly, this factor does not
`weigh in favor of or against exercising our discretion to deny institution.
`
`2.
`
`Factor 2: proximity of the court’s trial date to the Board’s projected
`statutory deadline for a final written decision
`If the district court’s trial date is earlier than the projected statutory
`deadline, the Board generally has weighed this fact in favor of exercising
`discretion to deny institution. Fintiv, Paper 11 at 9. If the court’s trial date
`
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`is at or around the same time as the projected statutory deadline or even
`significantly after the projected statutory deadline, the decision whether to
`institute will likely implicate other Fintiv factors, such as the resources that
`have been invested in the parallel proceeding. Id.
`Patent Owner asserts that the trial in the Fitbit case “will likely take
`place in summer 2021,” several months before the projected deadline to
`issue a final written decision in this proceeding. Prelim. Resp. 19 (citing Ex.
`2003, 3). However, no trial date has been set, and on September 21, 2020
`(after the briefs in this proceeding were filed), the court granted a joint
`motion by the parties to modify the scheduling order, including setting the
`date for the pretrial conference for September 17, 2021. Ex. 1056, 1.
`Therefore, under the current schedule, it appears that the trial will be at some
`date, as yet to be determined, after September 17, 2021, and likely after the
`projected deadline to issue a final written decision in this proceeding.
`Indeed, Petitioner argues that the trial will likely not take place until
`October 2022, based on statistics that show that the court’s average time to
`trial in civil cases is approximately 36 months. Reply 4 (citing Ex. 1034, 1).
`Petitioner also cites the fact that the court in which the Fitbit case resides has
`six currently pending, previously filed, patent cases on its docket, none of
`which currently have a trial date set. Id. (citing Exs. 1035–1042). On the
`other hand, citing the local patent rules of the court, which specify that trial
`be held within 24 months of the scheduling conference, Patent Owner asserts
`the Fitbit case will go to trial before the projected deadline to issue a final
`written decision in this proceeding. Sur-reply 2–3 (citing Ex. 2015, 32).
`However, the local rules notwithstanding, as discussed above, the actual trial
`will likely take place after the final decision here.
`
`
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`Trial in the Garmin case is set for July 27, 2021, approximately three
`months prior to the target date of the final written decision in this
`proceeding.8 Petitioner argues that the Garmin trial date is irrelevant given
`that the Fitbit and Garmin cases “are distinct, unconsolidated, and in
`different venues.” Reply 2. For the reasons discussed below in connection
`with Factor 5, we consider the facts surrounding the Garmin case, including
`the trial date, as relevant to our determination of whether to invoke our
`discretion to deny institution. Petitioner also cites the fact that the Central
`District of California, where the Garmin case resides, issued a COVID-19
`Notice on August 6, 2020 (“August COVID Notice”) “indefinitely
`postponed all jury trials” due to the COVID-19 pandemic. Id. at 3 (citing
`Ex. 1033); see also Ex. 2013. However, given that the court in the Garmin
`case set the above-mentioned trial date after this August COVID Notice, we
`agree with Patent Owner that it is speculative to assume the August COVID
`Notice would affect that date. See Sur-reply 2.
`The fact that trial in the Fitbit case likely will take place at some
`undetermined time, and likely after a final decision would issue in this
`proceeding, weighs against exercising our discretion to deny institution,
`although “the decision whether to institute will likely implicate other factors
`discussed herein, such as the resources that have been invested in the parallel
`proceeding.” Fintiv, Paper 11 at 9. The fact that trial in the Garmin case
`will likely take place several months prior to the final decision weighs in
`
`
`8 The parties’ briefs state that the Garmin trial is scheduled for March 30,
`2021. E.g., Prelim. Resp. 19. However, the current docket for the Garmin
`case shows that, on September 21, 2020, the Court granted the parties’
`stipulated extension to the schedule, including resetting the trial date to July
`27, 2021. Ex. 2016, 3.
`
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`favor of invoking our discretion to deny institution. Overall, we determine
`that this factor weighs slightly in favor of invoking our discretion to deny
`institution.
`
`3.
`
`Factor 3: investment in the parallel proceeding by the court and the
`parties
`Factor 3 relates to “the amount and type of work already completed in
`the parallel litigation by the court and the parties at the time of the institution
`decision.” Fintiv, Paper 11 at 9. Patent Owner argues that “[the parties] and
`the courts have already performed, and will continue to perform, a
`considerable amount of work in the Fitbit and Garmin Litigations.” Prelim.
`Resp. 21. For example, Patent Owner asserts that “Fitbit and Garmin have
`served voluminous invalidity contentions (totaling well over 20,000 pages),
`including detailed claim charts asserting . . . prior art substantially the same
`[as] asserted here (Browne, Ausems, Hsu, Hickman, and Theimer).” Id.
`(citing Exs. 2004, 2005). In addition, according to Patent Owner, “[t]he
`parties are nearing the end of fact discovery, all of the inventors have been
`deposed, [and] document production is substantially complete.” Sur-reply 3.
`However, Petitioner asserts that, for a substantial initial portion of the
`Fitbit case, most of the activity involved a motion to dismiss, and as a result
`Petitioner has not yet answered the complaint or asserted affirmative
`defenses or counterclaims. Reply 4–5. Also, document discovery was
`stayed until March 24, 2020 in light of the pending motion to dismiss. Id. at
`5 (citing Ex. 1048, 25–26; Ex. 1049, 17). Nonetheless, as of March 25,
`2020, a full schedule setting all of the standard litigation milestones was
`entered. Ex. 2003. Also, Petitioner has served its invalidity contentions
`
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`directed to the ’377 patent in accordance with that schedule, and invalidity
`contentions also have been served in the Garmin case. Exs. 2004, 2005.
`Pursuant to the Fitbit schedule, the court held a Markman hearing on
`August 5, 2020, but has not yet issued a claim construction order. See
`Ex. 1052, Docket 87. Petitioner argues that claim construction in the Fitbit
`case is not complete, because the court required the parties to select ten
`terms for initial construction, with the possibility of construing additional
`terms at a later date. Reply 5 (citing Ex. 1050, 1055). However, the court
`required Petitioner to first establish that the construction of additional terms
`“is in dispute and is material to invalidity or infringement of a claim.”
`Ex. 1050, 1. And, as Patent Owner points out, the court has already denied
`Petitioner’s motion for leave to have additional terms construed, casting
`doubt on the success of any renewed request. Sur-reply 3–4.
`The court in Garmin took the claim construction issues under
`advisement without a hearing, and entered a claim construction order on
`August 28, 2020. Exs. 2006, 2014. Significantly, the Garmin claim
`construction order considered constructions for several terms or phrases in
`claim 1 of the ’377 patent. Ex. 2014, 29–34. The present record is an
`example of one scenario referred to in Fintiv, where “district court claim
`construction orders may indicate that the court and parties have invested
`sufficient time in the parallel proceeding to favor denial.” Fintiv, Paper 11
`at 10.
`Beyond the claim construction issues, it does not appear that the
`district courts have yet substantively considered any of the unpatentability
`arguments set forth in the Petition. Although mindful that both the Fitbit
`and Garmin cases are ongoing and that schedules can change, based on the
`
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`current record as to the work already completed as of the time of this
`Decision, we determine that this factor weighs somewhat in favor of
`invoking our discretion to deny institution of an inter partes review.
`
`4.
`
`Factor 4: overlap between issues raised in the petition and in the
`parallel proceeding
`Factor 4 evaluates “concerns of inefficiency and the possibility of
`conflicting decisions” when substantially identical prior art is submitted in
`both the district court and the inter partes review proceedings. Fintiv, Paper
`11 at 12.
`Patent Owner submits that “there is complete overlap between issues
`raised in the Petitions and the Fitbit and Garmin Litigations.” Prelim. Resp.
`22. As Patent Owner points out, the same claims of the ’377 patent
`challenged here are asserted by Patent Owner in the Fitbit and Garmin cases,
`and the Petition asserts six references (Browne, Ausems, Hsu, Hickman,
`Theimer, and Vaisanen) that, with the exception of Vaisanen, Fitbit and
`Garmin have asserted in their invalidity contentions in the respective district
`court cases. Id. (citing Exs. 2004, 2005).
`Petitioner responds by stipulating “that it will not pursue, in district
`court, invalidity of the ’377 patent based on any instituted IPR ground.”
`Reply 6 (citing Apple Inc. v. Maxell, Ltd., IPR2020-00204, Paper 11 at 16–
`17 (PTAB June 19, 2020). However, Patent Owner argues that Petitioner’s
`proposed stipulation is too narrow, because other art relied on by Petitioner
`in the Fitbit case is substantially similar to the art relied on here, and
`Petitioner is relying on combinations that include art relied on here, but
`which would not be precluded by Petitioner’s proposed stipulation. Sur-
`reply 4–5.
`
`
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`Our review of Petitioner’s contentions in Fitbit, together with our
`preliminary review of the merits of the Petition before us, lend credence to
`Patent Owner’s arguments. See Ex. 2005. For example, in Petitioner’s
`contentions in the district court case, the two principle references relied on
`here — Browne and Hickman — are cited together with a number of other
`references as teaching, alone or in combination, the asserted claims of the
`’377 patent. Id. at 72–90. From our review, it appears that the field is
`crowded with pertinent prior art, and given the breadth of the claims, the
`district court will be considering and resolving issues very similar to those
`that would be considered in this proceeding, even if Petitioner stipulated to
`not pursue instituted IPR grounds.
`Thus, Petitioner’s stipulation reduces concerns regarding overlapping
`issues, but it does not eliminate them. See Sand Revolution II, LLC v.
`Continental Intermodal Group – Trucking LLC, IPR2019-01393, Paper 24 at
`12, n.5 (PTAB June 16, 2020) (informative):
`Notably, Petitioner stipulates only that it will not pursue,
`in district court, the “same grounds” presented in the Petition in
`this case. . . . Petitioner could have stipulated that it would not
`pursue any ground raised or that could have been reasonably
`raised in an IPR, i.e., any ground that could be raised under
`§§ 102 or 103 on the basis of prior art patents or printed
`publications. A broader stipulation of that nature, not at issue
`here, might better address concerns regarding duplicative
`efforts and potentially conflicting decisions in a much more
`substantial way. Likewise, such a stipulation might help ensure
`that an IPR functions as a true alternative to litigation in
`relation to grounds that could be at issue in an IPR. Further
`still, Petitioner could have expressly waived in the district court
`any overlapping patentability/invalidity defenses. Doing so
`might have tipped this factor more conclusively in its favor.
`
`
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`Here, Petitioner’s stipulation does not encompass invalidity grounds based
`on combinations that include the references relied on here (or substantially
`similar references), but which are not precisely the same as the grounds of
`the Petition.
`In addition, as Patent Owner points out, the proposed stipulation does
`not limit the invalidity issues to be considered in the Garmin case. Sur-reply
`5. Thus, we are persuaded that there is likely to be substantial overlap
`between the issues raised in the Petition and in the Garmin case.
`Accordingly, we determine that the effect of Petitioner’s proposed
`stipulation weighs somewhat against invoking our discretion to deny
`institution.
`
`5.
`
`Factor 5: whether the petitioner and the defendant in the parallel
`proceeding are the same party
`There is no dispute that Petitioner is a defendant in the Fitbit case but
`not a defendant in the Garmin case. In regard to the Garmin case, Petitioner
`argues that we should ignore Patent Owner’s “attempt to lump the Garmin
`litigation with Fitbit, especially where there is no evidence of Garmin
`challenging the ’377 patent before the PTAB.” Reply 6. However, “[e]ven
`when a petitioner is unrelated to a defendant, . . . if the issues are the same
`as, or substantially similar to, those already or about to be litigated . . . the
`Board may, nonetheless, exercise the authority to deny institution.” Fintiv,
`Paper 11 at 14.
`In addition, “[a]n unrelated petitioner should, therefore, address any
`other district court or Federal Circuit proceedings involving the challenged
`patent to discuss why addressing the same or substantially the same issues
`would not be duplicative of the prior case even if the petition is brought by a
`
`
`
`
`15
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`Case 2:19-cv-06301-AB-KS Document 123-2 Filed 02/05/21 Page 17 of 23 Page ID
`#:4036
`IPR2020-00828
`Patent 8,277,377 B2
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`different party.” Id. Petitioner, however, does not offer any explanation for
`why addressing the same or substantially the same issues in this proceeding
`would not be duplicative of the proceedings in the Garmin case.
`Furthermore, we credit Patent Owner’s assertion that “the similarities in the
`invalidity contentions and claim construction positions of the litigations
`strongly indicate that Fitbit and Garmin are coordinating their litigation
`efforts.” Prelim. Resp. 1.
`Accordingly, the fifth Fintiv factor weighs in favor of invoking our
`discretion to deny institution.
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`6.
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`Factor 6: other circumstances that impact the Board’s exercise of
`discretion, including the merits
`The factors considered in the exercise of discretion are part of a
`balanced assessment of all the relevant circumstances in the case, including
`the merits. Fintiv, Paper 11 at 14. For example, if the merits of a ground
`raised in the petition seem particularly strong on the preliminary record, this
`fact has favored institution. Id. at 14–15. By contrast, if the merits of the
`grounds raised in the petition are a closer call, then that fact has favored
`denying institution when other factors favoring denial are present. Id. at 15.
`Here, Patent Owner argues that the asserted grounds are not strong and
`should be denied on the merits. Prelim. Resp. 23. Petitioner, on the other
`hand, argues that the Petition is strong and Patent Owner’s Preliminary
`Response does not weaken the asserted grounds. Reply 7.
`Petitioner’s first asserted ground of unpatentability turns on the
`combination of Browne, Ausems, and Hsu. Pet. 11–45. Specifically,
`Petitioner asserts that it would have been obvious to one of ordinary skill in
`the art to modify Browne’s exercise monitoring system to use a web-enabled
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`16
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`Case 2:19-cv-06301-AB-KS Document 123-2 Filed 02/05/21 Page 18 of 23 Page ID
`#:4037
`IPR2020-00828
`Patent 8,277,377 B2
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`wireless phone as taught by Ausems. Id. at 16–17 (citing Ex. 1002 ¶¶ 78–
`81, 118). Petitioner also asserts that it would have been obvious to one of
`ordinary skill in the art to further modify Browne’s exercise monitoring
`system to use a method of downloading a software application from a
`remote server over the Internet as taught by Hsu. Id. at 17 (citing Ex. 1002
`¶¶ 78–81, 119).
`With respect to the merits of this asserted ground, Patent Owner
`argues, inter alia, that neither the Petition nor the Sarrafzadeh Declaration
`adequately explains why one of ordinary skill in the art would make the two
`modifications. Prelim. Resp. 33–44. Without conducting a full analysis,9
`we see at least some merit in Patent Owner’s argument, such that we view
`the question of whether Petitioner has established a reasonable likelihood of
`prevailing on this ground as being a close call. For example, as a rationale
`supporting the proposed modifications, Petitioner asserts that the web-
`enabled wireless phone as taught by Ausems “would have required a
`software application to perform its exercise monitoring functions,” such that
`one of ordinary skill in the art would have turned to Hsu’s disclosure of
`downloading an application from the Internet. Pet. 17–18. Patent Owner
`disputes this assertion, arguing that one of ordinary skill in the art would not
`understand Ausems’ device as being used for “exercise monitoring
`functions.” Prelim. Resp. 37. We credit this argument because, as we
`understand the proposed combination, the wireless phone would function to
`wirelessly send data to a master data processor, but not function to monitor
`exercise. See Pet. 16–17. Petitioner, however, also asserts that “[a] web-
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`9 See Fintiv, Paper 11 at 15 (“This is not to suggest that a full merits analysis
`is necessary to evaluate this factor.”).
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`Case 2:19-cv-06301-AB-KS Document 123-2 Filed 02/05/21 Page 19 of 23 Page ID
`#:4038
`IPR2020-00828
`Patent 8,277,377 B2
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`enabled wireless phone would have required a software application to
`receive and transmit exercise data and provide feedback in Browne’s
`modified method,” such that one of ordinary skill in the art would have
`looked to a downloading method like that of Hsu. Id. 20–21. In view of
`these considerations, we see the question of whether Petitioner has
`established adequately a reason to make the proposed modification to be a
`particularly close call.
`Petitioner’s second and third asserted grounds of unpatentability turn
`on the combination of Hickman and Theimer. Pet. 45–82. This combination
`relies on the assertion that one of ordinary skill in the art would have
`understood that the “script” disclosed by Hickman is an “application” as
`claimed. Id. at 50 (citing Ex. 1004, Abstract, Fig. 4, 2:25–30, 2:41–45,
`4:33–36, 7:38–58, 8:15–47; Ex. 1002 ¶ 211; Ex. 1025, 3; Ex. 1026, 3).
`Patent Owner disagrees, arguing that Hickman’s scripts are not
`“applications.” Prelim. Resp. 50–51 (citing Ex. 1004, Abstract, 7:59–8:14;
`Ex. 2009, 4).
`We note that Petitioner does not propose a proper construction of the
`claim term “application” that would support its assertion. Instead, Petitioner
`cites Exhibits 1025 and 1026, which provide dictionary definitions of the
`term, without providing any analysis of intrinsic evidence. The Court of
`Appeals for the Federal Circuit does not endorse a rush to dictionaries to
`construe disputed claim language:
`The main problem with elevating the dictionary to such
`prominence is that it focuses the inquiry on the abstract meaning
`of words rather than on the meaning of claim terms within the
`context of the patent. Properly viewed, the “ordinary meaning”
`of a claim term is its meaning to the ordinary artisan after reading
`the entire patent. Yet heavy reliance on the dictionary divorced
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`Case 2:19-cv-06301-AB-KS Document 123-2